Model order casts a net over patent e-discovery fishing expeditions

The Federal Circuit released a model order in September that recommends significant new limits on e-discovery in patent cases. A subcommittee of judges and lawyers headed by Chief Judge Randall Rader drafted the order, which was unanimously adopted by the Federal Circuit Advisory Council.

The limits aim to reduce the costs of discovery in intellectual property cases, which average 62 percent higher than non-IP cases, according to a 2010 report from the Federal Judicial Center, the research and education agency of the U.S. federal court system. This higher cost results from the volume of scientific and technical material and wide product time frames involved in most patent litigation. Courts that rush through patent cases also escalate costs, according to Patrick Oot, co-founder and general counsel of the non-profit Electronic Discovery Institute.

“When there is tremendous time pressure, as occurs in a rocket docket patent jurisdiction, litigants sometimes sacrifice efficiency for speed to meet the deadlines,” says Oot.

Experts have noted the low cost-benefit ratio of current e-discovery processes, particularly searches for email. “It appears that the perceived value of email evidence at the end of the discovery in patent cases is relatively low, yet historically, the discovery costs associated with email discovery are a top line item,” says Oot.

In a recent speech, Judge Rader referred to an analysis that concluded that .0074 percent of the documents produced in e-discovery were actually included on a trial exhibit list—less than one document in 10,000. And in the thousands of appeals he has evaluated, email appears even more rarely as relevant evidence, Judge Rader said.

Search Limits

The order anticipates that parties will first exchange core documentation concerning the patent, accused products, prior art and finances, which are often the subject of mandatory disclosures in the jurisdictions with local patent rules, before making e-discovery requests.

It provides that “[g]eneral ESI (electronically stored information) production requests under the Federal Rules of Civil Procedure shall not include email or other forms of electronic correspondence,” which are all referred to as “email” in the order. To obtain such correspondence, parties must make specific production requests, rather than seeking broad discovery of email relating to the opposing party’s business or entire product line and other such “unlimited fishing expeditions.”

The model order also provides numerical limits that apply only to email requests, says Mayer Brown Partner Sharon Israel. Each party may request email retained by only five people, known as custodians, and five search terms per custodian.Courts may consider allowing five additional custodians per producing party and five additional search terms per custodian. Additional requests may also be allowed, if the requesting party bears some or all of the additional production expense. Litigants who submit e-discovery requests that exceed court orders and the parties’ agreement also may be ordered to pay for the extra production.

The order also creates a distinction between general ESI production requests and requests for email regarding metadata, which is data about data. The order limits metadata for general ESI production, absent a showing of good cause, to the distribution list for a document, as well as the date and time the document was sent or received. No such metadata limitations are set for email requests.

Some courts have held that attorneys waived their rights to retain attorney-client privileged communications that were inadvertently but negligently released in large productions of e-discovery, even with clawback agreements in place. This results in extensive, expensive review of documents prior to production to assure no “smoking gun” evidence is released. The model order seeks to reverse this result and thereby reduce some of the costs associated with pre-production review. In a major change, it eliminates altogether the waiver for inadvertently produced privileged and work-product ESI. Under the order, receiving parties are barred from using e-discovery in the proceedings that the producing party asserts is attorney-client privileged or work-product protected.

Best Practices

Israel favors the overall concept of such rules to attempt to manage e-discovery. But, she notes, “I’d be most concerned about limiting search terms because the quality of such terms is often what matters in order to hone in and focus discovery in a case.”

Israel recommends litigants consider tailoring the model order to the circumstances of their case. She also proposes that inventors be included as automatic custodians who do not count against the limit on custodians.

Depending on the case, consider modifying other provisions, Israel adds. For example, there may be times when third-party discovery may be key to a case. Without some clarification, agreeing to a limit of five party custodians may be interpreted to mean no third-party custodians’ email can be reviewed, she adds.

Overall, the model order will require the parties to focus their e-discovery requests upfront rather than embarking on fishing expeditions.

“The model order is an effective strategy to force litigants to focus their resources on the most important discovery and pre-assess the value of requests beforehand,” Oot says.